Practices

The fundamental aim of Nakamura & Partners is to provide our clients with a wide range of highly professional services mainly in the field of intellectual property ranging from acquiring strong exclusive rights up to effectively enforcing the exclusive rights and dealing with legal work relating thereto.
Our firm mainly provides the following services, the details of which are listed below. The outline of the laws and procedures in Japan to protect Intellectual Property Rights can be found here.

Creation and acquisition of intellectual properties

  • Counseling and search assistance related to creation and acquisition of intellectual properties (IPs) such as inventions, utility models, designs, trademarks, new plant varieties, Geographical Indications (GIs), works, trade secrets, and big data
  • Counseling, search assistance, regulatory document preparation, and negotiation related to employee creations of IPs such as employee inventions
  • Counseling, search assistance, IP due diligence, IP value evaluation, negotiation, and contract document preparation related to industry-academia collaboration, R&D consignment, joint R&D, technological cooperation, licensing-in, M&A, external procurement, startup company investment, and other open innovation; Applications for registrations of transfers of patent rights, design rights and trademark rights, license thereunder, and pledge thereupon before the Japan Patent Office (JPO); Applications for registrations of transfers of breeder’s rights, license thereunder, and pledge thereupon before the Ministry of Agriculture, Forestry, and Fisheries (MAFF)
  • Counseling, search assistance, negotiation, and document preparation related to contract and legal affairs concerning fashion, entertainment, sports, media, and agribusiness

Acquisition and maintenance of intellectual property rights

  • Value evaluation, counseling, and search assistance related to selection and combination of protection methods such as IPR mix, and support for protection, of IPs such as inventions, utility models, and new plant varieties
  • Counseling and support for acquisition of foreign rights for inventions, utility models, designs, trademarks, new plant varieties, and GIs
  • Counseling and support for legal protection of big data
  • Applications for patents, utility model registrations, design registrations, and trademark registrations, intermediate processing of the applications, appeal trials against rejection of the applications before the JPO; Litigation for cancellation of trial decisions by the JPO for rejection of the applications before the IP High Court
  • Applications for new plant variety registrations and GI registrations before the MAFF; Litigation for cancellation of rejection by the MAFF of the applications before the court
  • Applications for extension registrations of patents, intermediate processing of the applications, appeal trials against rejection of the applications before the JPO; Litigation for cancellation of trial decisions by the JPO for rejection of the applications before the IP High Court
  • Applications for renewal of trademark registrations before the JPO

Oppositions, trials and appeals

  • Counseling, search assistance, expert opinion, negotiation, and foreign dispute resolution support related to validity of patents, utility model registrations, design registrations, trademark registrations, new plant variety registrations, and GI registrations
  • Oppositions to patents and trademark registrations, invalidation trials against patents, utility model registrations, design registrations, and trademark registrations, and cancellation trial against trademark registrations due to non-use before the JPO; Litigation for cancellation of decisions by the JPO before the IP High Court
  • Oppositions to new plant variety registrations and GI registrations before the MAFF; Litigation for cancellation of decisions by the MAFF before the court

Exploitation of intellectual properties

  • Support for IP information disclosure and intellectual asset management report
  • Counseling, search assistance, value evaluation, negotiation, and contract document preparation related to monetization such as licensing-out, sales, and trust, and collateralization such as pledge of IPs; Applications for registrations of transfers of patent rights, design rights and trademark rights, license thereunder, and pledge thereupon before the JPO; Applications for registrations of transfers of breeder’s rights, license thereunder, and pledge thereupon before the MAFF
  • Counseling, search assistance, negotiation, and contract document preparation related to standardization, business alliance, joint venture, free licensing-out, corporate venturing, and other open innovation
  • Counseling, search assistance, negotiation, and contract document preparation related to open & close strategy
  • Counseling, search assistance, negotiation, and document preparation related to contract and legal affairs concerning fashion, entertainment, sports, media, and agribusiness

Dispute resolution related to intellectual properties

  • Counseling, search assistance, expert opinion, negotiation, and foreign dispute resolution support related to infringement of patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, neighboring rights and publicity rights, ownership and compensation of employee inventions, illegal use of GIs, and misappropriation of trade secrets and big data, and other violations of the Unfair Competition Prevention Act
  • Counseling, search assistance, negotiation, and countermeasures related to counterfeit goods, pirated goods, harm to reputation, defamation, and disclosure of identification information, on the Internet
  • Litigation related to infringement of patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, neighboring rights and publicity rights, ownership and compensation of employee inventions, illegal use of GIs, misappropriation of trade secrets and big data, and other violations of the Unfair Competition Prevention Act, harm to reputation, defamation, and disclosure of identification information before the court
  • Border enforcement against goods infringing patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights and neighboring rights, and goods violating the Unfair Competition Prevention Act before the Customs
  • Official opinion related to infringement of patent rights, utility model rights, design rights, and trademark rights, and essentiality of patents to standards by the JPO
  • Counseling, search assistance, expert opinion, negotiation, and foreign dispute resolution support related to disputes on IP-related contracts such as R&D consignment, joint R&D, licensing, fashion contracts, entertainment contracts, sports contracts, media contracts, and agribusiness contracts
  • Litigation related to disputes on IP-related contracts such as R&D consignment, joint R&D, licensing, fashion contracts, entertainment contract, sports contracts, media contracts, and agribusiness contracts before the court
  • Arbitration and mediation of domain names, FRAND licensing of standard essential patents, and other IPs

Other intellectual properties

  • Support for corporate IP-related education and enlightenment by dispatch of instructors and other measures
  • Support for corporate IP-related activities by dispatch or secondment of professionals and other measures

Other corporate legal affairs and general civil cases

  • Counseling, search assistance, legal due diligence, expert opinion, negotiation, document preparation and foreign dispute resolution support related to corporate legal affairs including international transactions, tax matters, contracts for manufacturing and supply, sales, outsourcing, agency, franchise, business alliance, and joint venture, and labor issues
  • Litigation related to corporate legal affairs including international transactions, tax matters, contracts for manufacturing and supply, sales, outsourcing, agency, franchise, business alliance, and joint venture, and labor issues, before the court
  • Commercial arbitration and mediation
  • Counseling and search assistance related to compliance including personal information protection laws, risk management and other crisis management, and other corporate governance
  • Counseling, search assistance, negotiation, and document preparation related to antitrust laws, Subcontract Act, and Act against Unjustifiable Premiums and Misleading Presentations, and other competition laws
  • Support of startup company legal affairs such as shareholder agreement, financing, exit strategy, and alliance with large company, university, and research institute
  • Counseling, search assistance, negotiation, document preparation, and litigation related to general civil cases